On 1 March 2019, in his judgment in Eli Lilly v Genentech Mr Justice Arnold (who seems to have dealt with most SPC cases at first instance in recent years) referred a long-awaited question to the CJEU on whether a patentee can rely on a third party marketing authorisation in its application for an SPC.

We have reported previously on the impact of numerical limitations in patent claims and on the law of equivalents following the Supreme's Court's Actavis decision. The recent judgment of HH Judge Hacon in Regen Lab v Estar Medical brings the two concepts together.

Last month the Journal of Intellectual Property Law & Practice published an article written by three members of our team analysing the key points of the landmark UK Supreme Court decision in Actavis v Eli Lilly.

The patent battle between Warner-Lambert (Pfizer) and Actavis and Mylan reached the Supreme Court in February 2018. Members of Fieldfisher's patent litigation team were in court to hear the judges' initial reaction to the arguments which can shed light on where the court's reasoned judgment will end up. The issues are of huge significance to users of the patent system. They include whether a patentable invention needs to be made "plausible" at the filing date and, if so, the level of information the patent application must include, and the correct approach to enforcing second medical use claims.

Hot on the heels of its ground breaking decision last summer in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, which introduced a doctrine of equivalents into English law, the Supreme Court is poised to hear another very significant patent case, Warner-Lambert v Actavis, this month, as we report in this blog.

A well-established principle of English patent law was that construction for the purposes of validity should mirror that in respect of infringement.
Risking seven years bad luck, Arnold J smashed that mirror when he held that it is no longer good law that a patent claim will lack novelty simply because a prior publication discloses subject matter which, if performed, will necessarily infringe the claim. In particular, subject-matter that would infringe a claim applying the doctrine of equivalents will not suffice to deprive that claim of novelty.
This decision – in Generics (UK) Ltd and others v Yeda Research and Development Company Limited and others [2017] EWHC 2629 (Pat) - marks the first patent court case to consider the impact on novelty of the UK doctrine of equivalents which was recently introduced into UK patent law by the Supreme Court in Actavis v Lilly [2017] UKSC 48.

Yesterday evening, Fieldfisher joined some 800 other members of the patent community to listen to a panel of European and US judges debate the recent UK Supreme Court decision in Actavis UK Ltd v. Eli Lilly & Co which introduced a doctrine of equivalents into UK law. The panel included two of the judges who decided the case in the Supreme Court, Lords Neuberger and Sumption, as well as Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice , Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague and Judge Kate O’Malley, US Court of Appeals for the Federal Circuit. The panel was chaired by Professor Sir Robin Jacob who explained that Lord Hoffman was unable to join the panel.
Here is a note of the key issues.

Eli Lilly and Actavis have been battling over the patent on Lilly's Alimta product since 2012. Fieldfisher went to the UK Supreme Court from 4 - 6 April 2017 to hear the latest round of the proceedings.